DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-26 are currently pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the "units" in claims 23 and 25.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22-25 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10, 15, 18, 20, and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 10, 15, 18, 20, and 25 recite the limitation "the compartment installation." There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22-25 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 22-25 are directed to an apparatus with configured "to perform and/or control" the methods of claims 1 and 13. However, an apparatus can be constructed with means to control these methods without actually performing the steps of claims 1 and 13 themselves. Thus, it is not apparent that claims 22-25 include all the limitations of the claims upon which they depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 21 is rejected under 35 U.S.C. 101 because the claimed invention does not fall within at least one of the four categories of patent eligible subject matter.
MPEP 2106 Step 1:
Claim 21 does not fall within at least one of the four categories of patent eligible subject matter because it recites software per se. The claims are directed to a "computer program" not embodied on any physical hardware (e.g., memory, etc.). Functional descriptive material such as a computer program must be structurally and functionally interrelated with a medium to allow its intended uses to be realized. Accordingly, claims directed to software per se are not within any of the four statutory categories and are not patentable subject matter. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1760 (Fed. Cir. 1994). See MPEP § 2106.03 for further guidance and discussion on computer-related nonstatutory subject matter.
Claims 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-26, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
With respect to claim 1:
obtaining at least one measurement parameter of a shipment deposited in the measuring module; and - providing, at least partially based on the obtained at least one measurement parameter, measurement information, wherein the measurement information represents at least one weight and/or size of the shipment deposited in the measuring module, and wherein at least one shipping option for shipping the shipment is determined at least partially based on the provided measurement information.
With respect to claim 13:
obtaining at least one measurement information, wherein the measurement information represents at least one weight and/or size of a shipment deposited in a lockable measuring module; and - determining, at least partially based on the obtained measurement information, at least one shipping option for shipping the shipment.
With respect to claim 26:
a first method comprising: obtaining at least one measurement parameter of a shipment deposited in the measuring module; and - providing, at least partially based on the obtained at least one measurement parameter, measurement information, wherein the measurement information represents at least one weight and/or size of the shipment deposited in the measuring module, and wherein at least one shipping option for shipping the shipment is determined at least partially based on the provided measurement information; and
a second method comprising: obtaining at least one measurement information, wherein the measurement information represents at least one weight and/or size of a shipment deposited in a lockable measuring module; and - determining, at least partially based on the obtained measurement information, at least one shipping option for shipping the shipment.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information (e.g., measurements and shipping options) for the processing shipping transactions (i.e., in the terminology of the 2019 Revised Guidance, commercial interactions (including marketing or sales activities or behaviors; business relations)).
The abstract idea shares similarities with other abstract ideas held to be non-statutory by the courts (see Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)—tailoring sales information presented to a user based on, e.g., user data or time data, similar because at another level of abstraction the claims could be characterized as tailoring shipping option information presented to a user based on, e.g., measurement data; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of shipment measurements and options, then returning the results; Content Extraction and Transmission. v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014)—collection, recognition, and storage of check document data, similar because at another level of abstraction the claims could be characterized as collection, recognition, and storage of shipment measurement data).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) or field-of-use in which to carry out the judicial exception (generic apparatuses and means; a measuring module that can be opened and locked; computer program, comprising program instructions that cause a processor to perform and/or to control the method—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it."
Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The opening and locking of the measuring module can also be viewed as performing insignificant extra-solution activity. See 2106.05(g). These activities are tangential to the performance of the shipment measuring and shipping option determination, which could be performed in the same fashion absent them. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014) (restricting public access to media was found to be insignificant extra-solution activity); Ameranth, 842 F.3d at 1241-42 (printing or downloading generated menus was an insignificant application of the abstract idea). Thus, these limitations do not place meaningful limits on the abstract idea.
Other than these elements the claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (generic apparatuses and means; a measuring module that can be opened and locked; computer program, comprising program instructions that cause a processor to perform and/or to control the method—see published Specification ¶¶ 0155-156, 159-160, 182, 193 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented (i.e., they merely narrow the abstract idea without adding any new additional elements beyond it). Although some of the claims reference storage and transport of the shipment, this is also part of the abstract idea. See Wireless Media Innovations, LLC v. Maher Terminals, LLC, 100 F. Supp. 3d 405, 415 (D.N.J. 2015) (finding the "process of monitoring and moving shipping containers and collecting the relevant data as to the location of the shipping containers" is "an abstraction") (emphasis added). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment, field-of-use, and instructions to implement the abstract idea as the independent claims.
Claims 2-4, 11-12, and 18 recite instances of opening, locking, and unlocking the measuring module. However, these are extra-solution activities for the same reasons as in the independent claims. Claims 5 and 25 recite a backend server; claims 5 and 14 recite a mobile device; and claims 23 and 25 recite a control unit. However, these merely further limit the general link to a technological environment. Claims 5, 11-12, 14, 18, 20, and 25 recite a compartment installation; however this merely further limits the field-of-use in which the abstract shipping interaction is performed. Finally, claim 15 recites a camera unit and claims 19 recites a sensor. However, these are generic devices used as tools for extra-solution data gathering activities.
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Although they add the elements identified in 2A above, these do not amount to significantly more for the same reasons they fail to integrate the abstract idea into a practical application. Moreover, the Specification also indicates this is the routine use of known elements for the same reasons presented with respect to the elements in the independent claims above (i.e., they are presented at a high level of generality in the disclosure without appreciable technical specifics, thus demonstrating that at the time of invention these elements were sufficiently well-known that such a detailed description was not required—see ¶¶ 0155-156 opening, locking, and unlocking the measuring module; ¶¶ 0194, 198 backend server; ¶ 0194 mobile device; ¶ 0193 control unit; ¶ 0166, 169 compartment installation; ¶ 0174 camera unit; ¶ 0160 sensor). Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 6-7, 9-10, 13-14, 16-17, and 19-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mercier, et al., U.S. Pat. Pub. No. 2009/0119232 (Citation 1 of the IDS filed 9/10/2024).
As per claim 1, Mercier teaches a method comprising: - causing the opening of a lockable measuring module (¶ 0061); - obtaining at least one measurement parameter of a shipment deposited in the measuring module (¶ 0070); and - providing, at least partially based on the obtained at least one measurement parameter, measurement information, wherein the measurement information represents at least one weight and/or size of the shipment deposited in the measuring module, and wherein at least one shipping option for shipping the shipment is determined at least partially based on the provided measurement information (¶¶ 0078, 95).
As per claim 2, Mercier teaches claim 1 as above. Mercier further teaches - determining, after causing the opening of the measuring module, whether the shipment has been deposited in the measuring module (¶¶ 0078, 91-95); - causing the locking of the measuring module if it is determined that the shipment has been deposited in the measuring module (¶ 0097); and - causing the unlocking of the measuring module after the at least one measurement parameter of the shipment has been obtained (¶ 0081).
As per claim 3, Mercier teaches claim 1 as above. Mercier further teaches the opening of the lockable measuring module is caused if it is determined that obtained access information provides authorization for opening the measuring module (¶¶ 0081, 103).
As per claim 6, Mercier teaches claim 1 as above. Mercier further teaches shipping information for shipping the shipment is determined at least partially based on the at least one shipping option and a user input (¶¶ 0094-95).
As per claim 7, Mercier teaches claim 6 as above. Mercier further teaches - causing the providing of a shipping labeling, wherein the shipping labeling is at least partially based on the shipping information (¶ 0115).
As per claim 9, Mercier teaches claim 1 as above. Mercier further teaches - obtaining franking information of the deposited shipment, wherein the franking information indicates franking of the deposited shipment (¶ 0096).
As per claim 10, Mercier teaches claim 1 as above. Mercier further teaches - causing, after providing the measurement information, the storing of the shipment in the compartment installation for the shipping of the shipment in accordance with the shipping information (¶ 0096).
As per claim 13, Mercier teaches a method comprising: -obtaining at least one measurement information, wherein the measurement information represents at least one weight and/or size of a shipment deposited in a lockable measuring module (¶ 0070); and - determining, at least partially based on the obtained measurement information, at least one shipping option for shipping the shipment (¶¶ 0078, 95).
As per claim 14, Mercier teaches claim 13 as above. Mercier further teaches the obtained at least one measurement information is obtained from the measuring module (¶¶ 0070, 78), from a mobile device or from a compartment installation and is provided at the measuring module before the obtaining.
As per claim 16, Mercier teaches claim 13 as above. Mercier further teaches - determining, at least partially based on the at least one shipping option and a user input, shipping information for shipping the shipment (¶¶ 0094-95).
As per claim 17, Mercier teaches claim 16 as above. Mercier further teaches the shipping information indicates at least one shipping option selected from the at least one shipping option, and furthermore indicates a shipping cost amount of the at least one selected shipping option (¶¶ 0094-95), and wherein the method in particular further comprises: - determining, at least partially based on the franking information obtained from the measuring module and the shipping cost amount of the selected shipping option, whether the shipment is sufficiently franked (¶ 0096).
As per claim 19, Mercier teaches claim 1 as above. Mercier further teaches the measuring module comprises at least one sensor for detecting the at least one measurement parameter of the shipment, and wherein the at least one measurement parameter of the shipment is detected by the at least one sensor while the shipment is located in the measuring module (¶¶ 0070, 78).
As per claim 20, Mercier teaches claim 1 as above. Mercier further teaches the measuring module is a part of the compartment installation (¶¶ 0091, 96).
As per claim 21, Mercier teaches a computer program, comprising program instructions that cause a processor to perform and/or to control the method according to Claim 1 when the computer program runs on the processor (¶ 0068, see also citations above).
As per claim 22, Mercier teaches an apparatus, configured to perform and/or control the method according to Claim 1 or comprising respective means for performing and/or controlling the steps of the method according to Claim 1 (Fig. 1, ¶ 0068, see also citations above).
As per claim 23, Mercier teaches claim 22 as above. Mercier further teaches the apparatus is a control unit of the measuring module (¶ 0070).
As per claim 24, Mercier teaches an apparatus, configured to perform and/or control the method according to Claim 13 or comprising respective means for performing and/or controlling the steps of the method according to Claim 13 (Fig. 1, ¶ 0068, see also citations above).
As per claim 25, Mercier teaches claim 24 as above. Mercier further teaches the apparatus is a control unit of the compartment installation (¶¶ 0068-70, Fig. 1) or is the backend server.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mercier, et al.
As per claim 5, Mercier teaches claim 1 as above. Mercier further teaches the at least one shipping option is determined at least partially based on the provided measurement information at a management unit (¶ 0078), and wherein providing the measurement information further comprises: - transmitting the measurement information to the management unit (¶ 0070). Mercier does not explicitly teach that the management unit is a backend server; however it does teach the use of a backend server more generally which is in communication with the management unit (¶ 0086). It would have been prima facie obvious to modify Mercier by transmitting the measurement information where the at least one shipping option is determined at least partially based on the provided measurement information because these are both general purpose computers already disclosed as being in communication with one another. One of ordinary skill would have recognized that these functions could be performed at either location and yield only predictable results.
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mercier, et al. in view of Tateno, et al., U.S. Pat. No. 4,836,352 (Citation 5 of the IDS filed 9/10/2024).
As per claim 4, Mercier teaches claim 1 as above. Mercier further teaches - determining, after the at least one measurement parameter has been obtained, whether a shipment is located in the measuring module (¶ 0078). Mercier does not explicitly teach if it is determined that no shipment is located in the measuring module, causing the locking of the measuring module; which is taught by Tateno (col. 3, lines 44-49—green lamp indicates the box is empty; col. 6, lines 23-32). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Tateno—namely, to limit access to the module to only when transactions are being processed (see cols. 6-7). Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 11, Mercier teaches claim 10 as above. Mercier does not explicitly teach - causing the transporting of the shipment from the measuring module into the compartment installation; which is taught by Tateno (col. 10, lines 29-40). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Tateno—namely, to move the shipment to a longer-term storage location while freeing up the measurement module for other customers. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Claims 8, 12, 15, 26 and are rejected under 35 U.S.C. 103 as being unpatentable over Mercier, et al. in view of Abutbul, U.S. Pat. Pub. No. 2016/0321600 (Citation 2 of the IDS filed 9/10/2024).
As per claim 8, Mercier teaches claim 1 as above. Mercier does not explicitly teach - causing the packaging of the shipment at least partially based on the provided measurement information; which is taught by Abutbul (¶¶ 0033, 41). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Abutbul—namely, to prepare shipments that have not yet been packaged. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 12, Mercier teaches claim 10 as above. Mercier does not explicitly teach causing the storing of the shipment further comprises:- if it is determined at least partially based on the provided measurement information that the shipment is a letter shipment, causing the transporting of the shipment from the measuring module into the compartment installation; and - if it is determined at least partially based on the provided measurement information that the shipment is a parcel shipment, causing the opening of the measuring module, wherein the shipment is removed from the measuring module and is deposited in a compartment of the compartment installation, said compartment being determined at least partially based on the provided measurement information; which is taught by Abutbul (¶¶ 0033, 47, 57). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Abutbul—namely, to store similarly sized shipments together. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 15, Mercier teaches claim 13 as above. Mercier does not explicitly teach - obtaining further measurement information, wherein the further measurement information represents at least one size of the shipment deposited in the measuring module, wherein the further measurement information is at least partially based on at least one further measurement parameter of the shipment, wherein the at least one further measurement parameter of the shipment is captured by a camera unit of the compartment installation, and wherein determining at least one shipping option for shipping the shipment is at least partially based on the at least one measurement information and the further measurement information; which is taught by Abutbul (¶¶ 0028, 30, 34, 68). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Abutbul—namely, to gather more precise measurements of the item in order to prepare it for shipment. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 26, Mercier teaches a system comprising: a first apparatus configured to perform and/or control a first method (Fig. 1) comprising:- causing the opening of a lockable measuring module (¶ 0061); -obtaining at least one measurement parameter of a shipment deposited in the measuring module (¶ 0070); and - providing, at least partially based on the obtained at least one measurement parameter, measurement information, wherein the measurement information represents at least one weight and/or size of the shipment deposited in the measuring module, and wherein at least one shipping option for shipping the shipment is determined at least partially based on the provided measurement information (¶¶ 0078, 95); or comprising respective means for performing and/or controlling the steps of the first method (Fig. 1).
Mercier does not explicitly teach a second apparatus configured to perform and/or control a second method comprising:- obtaining at least one measurement information, wherein the measurement information represents at least one weight and/or size of a shipment deposited in a lockable measuring module; and - determining, at least partially based on the obtained measurement information, at least one shipping option for shipping the shipment; or the second apparatus comprising respective means for performing and/or controlling the steps of the second method. However, the second apparatus and method are not described as being any different from what comprises the first apparatus and method. Thus, it would have been prima facie obvious to incorporate the second apparatus because it is merely a duplication of parts and steps already disclosed and producing the same results. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (mere duplication of parts has no patentable significance unless a new and unexpected result is produced). Moreover, Abutbul teaches a second means/apparatus for performing these steps (¶¶ 0041-57). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Abutbul—namely, to process parcels and envelopes differently. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Mercier, et al. in view of Abutbul as applied to claim 13 above, further in view of Tateno, et al.
As per claim 18, Mercier in view of Abutbul teaches claim 13 as above. Abutbul further teaches - determining, at least partially based on the obtained at least one measurement information, a compartment of the compartment installation; and - causing the opening of the determined compartment of the compartment installation (¶¶ 0047, 57, 103-104; Fig. 4); which would have been obvious to incorporate for the same reasons as the elements in claim 12 above. To the extent that Abutbul may not explicitly teach opening of the compartment; this is taught by Tateno (col. 10, lines 30-34), and would have been obvious to incorporate for the same reasons as the elements in claim 11 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Gettle, et al., U.S. Pat. Pub. No. 2023/0184579 (Reference A of the attached PTO-892) relates to determining a shipping option.
Merle, U.S. Pat. Pub. No. 2020/0302388 (Reference B of the attached PTO-892) relates to determining a shipping option.
Frankenberg, et al., U.S. Pat. Pub. No. 2010/0004960 (Reference C of the attached PTO-892) relates to determining a shipping option.
Castro, et al., Embracing the self-service economy, available at SSRN 1590982, 2010, (Reference U of the attached PTO-892) relates to determining a shipping option.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628